Proposed amendments to the Patent Rules – Part 1
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Proposed amendments to the Patent Rules – Part 1


Good morning (good afternoon) everyone and
welcome to the first of three presentations on the proposed amendments to the Patent Rules. This presentation will focus on the proposed
amendments related to the topics of filing, priority, completion and representation of
the Rules. The additional two presentations will cover
the remaining 7 topics outlined in the consultation documents. As part of CIPO’s core vision to enhance innovation
and contribute to economic success in Canada, we are committed to improving the quality
of our products and services. In order to ensure that these proposed amendments
to the Rules address our clients’ needs, CIPO is undertaking an online consultation process
from August 1 to September 8, 2017. In addition, to these presentations, 11 detailed
discussion documents on the proposed amendments and a draft of the proposed Rules are available
on the CIPO website. Your feedback, comments and suggestions on
the impact of these proposed changes are an important step to this process and will help
support the implementation of the proposed amended Rules. This consultation has three main objectives:
To inform stakeholders of proposed changes to the Patent Rules. To provide the policy rationale behind the
changes. To obtain feedback, questions and comments
on the draft Rules. We will begin by providing a brief introduction
on the rationale for the proposed amendments to the Rules. This presentation will outline the proposed
changes to the provisions of the Rules for : filing, priority, completion and representation. We will conclude with information on how to
provide comments regarding this consultation. These changes stem from the Government’s
initiative to modernize Canada’s intellectual property, or “IP” framework. The Government first announced plans in 2014
to join five widely-recognized international IP treaties: the Madrid Protocol, the Singapore
Treaty, the Nice Agreement, the Patent Law Treaty and the Hague Agreement Concerning
the International Registration of Industrial Designs (the Hague Agreement). To give a bit of context, these proposed Rules
were drafted following two series of amendments to the Patent Act which received Royal Assent
on December 16, 2014 (Bill C-43) and on June 23, 2015 (C-59). The amendments are not yet in force. They will come into force once the necessary
coordinating amendments to the Patent Rules come into force. These amendments to the Patent Act and the
proposed amendments to the Patent Rules are required for Canada to accede to the Patent
Law Treaty While the majority of the proposed amendments
for the Rules are required in order to comply with the requirements under the treaty, other
amendments were made to undertake a broader review and renumbering of the Rules. The amendments will:
increase legal certainty; streamline and clarify CIPO’s processes and
procedures; and align Canada’s patent protection regime
with that of its international trading partners. A modernized patent framework will enable
Canada to keep pace with leading international standards and benchmarks, in turn helping
Canadian businesses stay competitive in international markets by giving them an efficient means
of protecting their intellectual property in various jurisdictions around the world. A regime that is aligned with other jurisdictions
will also lower the cost and increase the ease of doing business here to the benefit
of both Canadian businesses and those looking to invest in Canadian markets. The Patent Law Treaty was concluded in June
2000 with an aim to harmonize and streamline the administrative procedures for patent applications
and patents. In other words, applicants and patentees will
be able to expect the same or similar administrative processes for all jurisdictions for patent
applications and patents. There is no change to substantive patent law;
‘what’ is patentable doesn’t change and remains part of domestic laws. At present, the PLT has 39 contracting states
while 59 states and the European Patent Organization have signed but not yet ratified the treaty. Canada signed in 2001 and in 2014 noted its
intent to ratify the PLT by making the necessary amendments to the Act. Once the corresponding amendments are made
to the Patent Rules, Canada will ratify the PLT. Some of the major changes to the Canadian
patent regime include : Simplified and standard requirements to obtain
a filing date; A notification before abandonment thereby
preventing applicant loss of rights without first being advised;
The introduction of a 2 month grace period for restoring priority
The introduction of a due care standard and third party rights when certain actions are
not completed within the prescribed times. In the next few slides, we will discuss the
changes to filing a patent application, completing a patent application, priority and representation. Let’s begin with the proposed amendments
to file a patent application. Through a patent, the government gives the
owner the right to stop others from making, using or selling your invention from the day
the patent is granted to a maximum of 20 years after the day on which you filed your patent
application. In order to secure a filing date, the application
must comply with the minimum requirements to obtain a filing date. Those minimum requirements have been simplified
under the PLT. Under the current Patent Rules, the applicant
must submit the above elements as well as the filing fee in order to secure a filing
date. The description, the document that describes
the invention, must currently be in either English or French. Under the proposed amendments to the Patent
Rules, the filing fee is no longer required to secure a filing date. The amendments also allow the description,
the document that describes the invention to be submitted in any language. Although the information requirements regarding
the applicant and their contact information have been lessened, CIPO will continue to
encourage applicants to fully and correctly identify themselves as well as their complete
address and other contact information when they file a patent application. This will help reduce confusion for both applicants
and the Office when processing the application. If the requirements are complied with on different
dates, the latest of those dates will be the filing date given to the patent application. If the minimum requirements are not met, for
example, there is no document in any language that appears to describe the invention, then
the Commissioner will send a notice requiring the submission of the remaining requirements
within 2 months of the date of the notice. If they are not submitted within those same
2 months, then the application will be deemed to never have been filed. An application no longer requires a filing
fee to be paid at filing, however not paying it at that time will result in a 150$ late
fee. If the filing fee is not paid on the filing
date, the Commissioner will send a notice to the applicant requiring the filing fee
and a late fee of 150$ to be paid within 2 months of the date of the notice. If the fee is not paid within those same 2
months, then the application will be deemed withdrawn. Although the document describing the invention
(the description) does not need to be in English or French to establish a filing date, the
applicant is required to submit a translation into English or French of any part of the
specification (the part of the patent application that contains the description of the invention)
or drawings that on the filing date, was not entirely in English or French
For more information, please see the consultation document entitled Filing Requirements. Inventions are eligible for a patent when
they are new, non-obvious and inventive. The assessment of eligibility for a patent
is done using the filing date. If you have already submitted a patent application
for the same invention in Canada or in another country, you may be able to claim priority
to that earlier patent application and in effect use the priority filing date for that
assessment. Canada is a contracting party to the Paris
Convention, a treaty that allows an applicant for a patent to request what is called “convention
priority”, otherwise referred to as claiming priority. When a priority claim is made the filing date
of a patent application filed in one member country will be recognized by other member
countries provided patent applications are filed in those other countries within one
year of the filing date. It is also possible to claim priority in a
Canadian application based on an earlier filed Canadian application. For example, if you filed a patent application
in Canada on January 2, 2017, you could file up to one year later in most countries (January
2, 2018), including Canada, and still be given the same rights as if you had filed the application
on January 2, 2017 when you claim priority. Some amendments have already been made in
the Patent Act with respect to priority. There are additional proposed amendments in
the Patent Rules with respect to priority. Under the current Patent Rules, the request
for priority must be made no later than 16 months from the filing date of the earliest
priority application. The proposed amended Rules would impose a
limit to make a request for priority before the application is open to public inspection. If it is not open to public inspection, then
a request for priority may be made before the later of 16 months from the earliest priority
or 4 months after the filing date. Under the current Patent Rules, the information
contained in a priority request may be corrected by submitting a request to correct a clerical
error under section 8 of the Patent Act. If made within the timeline to make a priority
request, it is possible to withdraw the incorrect request and submit a new one. Section 8 of the Patent Act has been repealed,
though it is not yet in force. Under the proposed amended Patent Rules, there
are new provisions regarding corrections of information in priority claims within specific
timelines. More information on corrections to priority
information will be presented in the 3rd webinar of this series as well as the consultation
document entitled ‘Corrections’. Under the current Rules, applicants are only
required to submit a copy of the priority documents if it is taken into account by the
examiner during examination. If it is in a language other than English
or French, a translation must be submitted along with the document. Failure to provide either the priority documents
or the translation results in the application being deemed abandoned. Under the proposed amended Rules, applicants
will be required to submit a copy, or make available copies from a digital library of
all priority documents within a time limit. The translation is not required unless the
examiner takes into account the priority during examination and requests a translation of
the priority documents. If the documents or the translations are not
provided within the time limits, the priority claim will be disregarded and the application
will no longer go abandoned Restoration of the right of priority is not
available under the current Patent Act and Rules. Approved changes to the Patent Act, not yet
in force, provide for the restoration of priority where a subsequent application is filed within
2 months after the expiration of the priority period (from 12 to 14 months) from the filing
date of the earliest filed application. The request for restoration of priority must
be made no later than 2 months after the filing date of the pending application. Therefore the time limit for successfully
requesting restoration of priority can be up to 16 months from the filing date of the
earlier filed application. There is no proposed fee for making a request
for restoration of the right of priority. See the Consultation Document on Priority
and the draft Rules for more information. A patent application consists of many parts,
only a few of which are required to obtain a filing date (see Discussion Paper on Minimum
Filing Requirements). However, all of the parts of the patent application
must be submitted to complete the patent application within a short time after the filing date. The parts required for a complete patent application
will not change under the amended patent legislative regime though there will be some proposed
changes regarding how and when an application is to be completed. The current patent legislative regime requires
a sum of parts for a complete patent application. A description is required at filing whereas
the rest of the parts are not required to obtain a filing date. If the remaining parts are not provided at
the time of filing, then the Patent Rules require them to be submitted within 15 months
of the filing date or the earliest priority date requested. If the application does not meet the completion
requirements within that time, the Commissioner sends a notice requiring the applicant to
comply with the requirements before the later of 3 months from the date of the notice and
12 months after the filing date as well as a completion fee of $200. If the applicant doesn’t respond to the
notice, the application becomes abandoned. The recent changes to the Patent Act, which
are not yet in force, and the proposed amendments to the Patent Rules maintain the same list
of parts and requirements, though some would no longer be required to complete a patent
application to make it compliant. Under the new proposed legislative regime,
if the application is not complete on the filing date, the Commissioner will send a
notice requiring it to be completed. Once the notice is sent, the applicant will
have three months from the date of the notice to comply with the completion requirements. There will no longer be an additional fee
to complete the application after a notice is sent. However, if the notice is not complied with,
then the application will be deemed abandoned with the possibility to be reinstated. Please see the Discussion Paper – Representation
for more information The proposed amendments to the Patent Rules
maintain the current provisions for patent agent exams, eligibility, registration and
maintenance of patent agents on the Patent Agent Register. The current Patent Rules imposes limits on
who the Patent Office can communicate with during the patent application stage. The Patent Office can only communicate with
the authorized correspondent, which is typically the appointed patent agent. Proposed amendments to the Patent Rules will
allow more flexibility with respect to who can represent the applicant and communicate
with the Patent Office regarding certain actions to prosecute and maintain a patent application. The proposed amendments will also introduce
the concept of a common representative. There is no common representative under the
current Patent Rules. The proposed amendments define which applicant
is the common representative when there is more than one applicant. A common representative is one of multiple
applicants or patentees and allows him/her to represent them jointly. This concept, similar to the existing one
in the Patent Cooperation Treaty, is intended to address situations where joint applicants
cannot all sign the same document in a time-sensitive procedure, such as the appointment of a patent
agent. The proposed amendments also contain default
provisions for identifying the common representative when none has been appointed or when they
are no longer an applicant or patentee. Requirements for a Patent Agent
The proposed amendments maintain the mandatory requirement under the current Rules to appoint
a patent agent if: the application is filed by someone other
than the inventor, there is more than one inventor and the application
is not filed by all of the named inventors, or
a transfer has been recorded with the Patent Office. Requirements for an Associate Patent Agent:
The proposed amendments maintain the regulatory regime for associated patent agents. If the applicant is required to appoint a
patent agent, the Patent Office will send a notice requiring the appointment within
three months after the date of the notice. The applicant will be able to appoint an agent
who resides in Canada or a non-Canadian resident agent, who in turn will be required to appoint
an associate patent agent who resides in Canada within the same three months of the notice. Failure to do so will cause the patent application
to be deemed abandoned. Please see the Discussion Paper on Abandonment
& Reinstatement for more information. A patent agent can be appointed:
in the petition when the patent application is filed or the request for PCT national phase
entry ; or by submitting a notice to the Commissioner
signed by the applicant/patentee, or a common representative if there are multiple applicants. Note: an appointment in the petition or in
the request for PCT national phase entry does not need to be signed by the applicant or
common representative Only an appointed patent agent can appoint
an associate patent agent. A foreign patent agent must appoint a Canadian
associate patent agent. If the appointment is made at the time of
filing an application for a patent, it can be made:
in the petition as submitted when filing for a patent or in the request for PCT national
phase entry ; or by submitting a notice to the Commissioner
signed by the appointed patent agent If the agent is required to appoint an associate
patent agent, the Patent Office will send them a notice requiring them to do so within
three months after the date of the notice. Failure to do so will cause your patent application
to go abandoned. Please see the Discussion Paper on Abandonment
& Reinstatement for more information. Note: these types of appointments do not need
to be signed by the appointed patent agent During the application stage, the Patent Rules
impose a limit so that the only person who can take action on the file, whether it is
to communicate with the Patent Office, submit documents or pay fees, is the authorized correspondent. If a patent agent has been appointed, they
are the authorized correspondent; otherwise, it will be the inventor who is also the applicant. Once the patent has been granted, the Patent
Office will accept maintenance fee payments from persons authorized by the patentee. The proposed amendments will permit more individuals
to represent the applicant for certain actions related to prosecution and maintenance of
patent applications. In general, the following individual will
always be allowed to take action with the Patent Office:
The appointed patent agent; The sole applicant (if a patent agent is not
required); or The common representative (if there are multiple
applicants and if a patent agent is not required). However, there are exceptions where other
individuals will be able to perform some actions related to the prosecution and maintenance
of patent applications, whether or not a patent agent has been appointed: To submit a patent application or a request
for PCT national entry, The appointed patent agent /associate patent
agent can always act, As well as any of the applicants
Or A person authorized by any of the applicants The same goes for paying maintenance fees
for a patent application or a patent, The appointed patent agent /associate patent
agent may pay maintenance fees, As well as any of the applicants
Or A person authorized by any of the applicants There are also exceptions as to who can request
to record a transfer For more information, please see the discussion
document on Representation and the draft Rules. At the end of the consultation period on September
8, 2017, comments and submissions received will be reviewed. Stakeholders will have another opportunity
to provide comments when the draft Rules are published in Canada Gazette I. During this stage, the public will have 30
days to provide input and comments. The proposed Rules will then be presented
to Cabinet for final approval. If approved, the Rules will be published in
the Canada Gazette II with a coming into force date of the Act and Rules. As the proposed Rules advance over the coming
months, we will continue to engage stakeholders for example, on the development of Office
Practices and the Manual of Patent Office Practice. This concludes our presentation on the new
provisions of the amended Patent Rules. Should you have any questions or comments
on the contents of this presentation or on the Rules, you can visit our website for further
information. Here you will find links to key information
pages as well as current information on the next steps in this process. To learn more, ask questions, and submit your
comments/feedback on the proposed amendments, please email us at the address on the screen
In addition, you can follow CIPO on social media where we will continue to post updates
on the consultation process. Thanks for watching!

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